The Complainant is Real Madrid Club De Futbol of Madrid, Spain, represented by Internet Names World Wide España, SL, Spain.
The Respondent is Michele Dinoia of Pineto, Italy.
2. The Domain Name and Registrar
The disputed domain name, <realmadrid.org> (the “Domain Name”), is registered with Fabulous.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2010. On February 22, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 23, 2010, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 24, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 16, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 17, 2010.
The Center appointed Tony Willoughby as the sole panelist in this matter on March 24, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is and has for many decades been one of the foremost football clubs in the world. The Complainant is the registered proprietor of various trade marks of or including the words “Real Madrid”, including Community Trade Mark No. 517474 dated April 18, 1997 (registered November 25, 1998) for a device mark featuring a royal badge under which appear prominently the words “Real Madrid” in script.
The Complainant's website is connected to its domain name, <realmadrid.com>, a domain name which it registered in 1998.
The Domain Name was registered on July 3, 2001. It is connected to a directory website, the most prominent links being to football related topics e.g. “Football Training” and “Football”, but the website features a wide range of links to completely unrelated sites.
5. Parties' Contentions
A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Finally, the Complainant contends that the Domain Name was registered and is being used in bad faith.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
B. Identical or Confusingly Similar
The Complainant has registered trade mark rights in respect of the name REAL MADRID. While the only registration predating the date of registration of the Domain Name is a device mark, the main textual element of that mark is the name “Real Madrid” and in the view of the Panel that is sufficient to give the Complainant trade mark rights in the name for the purposes of paragraph 4(a)(i) of the Policy.
Additionally, were it necessary to do so, on the evidence put before the Panel in the Complaint, the Panel would have found for the purposes of this administrative proceeding that the Complainant has for many decades had trade mark rights in its name akin to common law trade mark along the lines of the reasoning set out in the Panel's decision in S.N.C. Jesta Fontainebleau v. Po Ser,WIPO Case No. D2009-1394.
The Domain Name comprises the Complainant's trade mark and the generic “.org” domain suffix. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy the domain suffix may be ignored.
The Panel finds that the Domain Name is identical or confusingly to the Complainant's trade mark.
C. Rights or Legitimate Interests
The name “Real Madrid” is very well known, particularly among those with an interest in football, as the name of the Complainant.
The Complainant contends that the Respondent registered the Domain Name, knowing of the existence of the Complainant, with the intention of deriving an unfair commercial benefit on the back of the Complainant's reputation and goodwill.
Certainly, the Respondent's website features footballing links and appears to the Panel to be a site which is set up to earn for the Respondent pay-per-click revenue. The fame of the Complainant is such that the clear inference has to be that the Respondent is seeking to attract traffic to his site by impersonating the Complainant.
At all events, the Respondent has a case to answer. In the absence of an answer the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
By the same reasoning, in the view of the Panel, the overwhelming probability is that the Respondent registered the Domain Name with a view to deriving commercial gain stemming from Internet users visiting the Respondent's site by mistake, believing that they were about to visit an official site of the Complainant.
That contention of the Complainant is clearly set out in the Complaint and invites an answer from the Respondent. The absence of an answer merely reinforces the Panel in his view that the Complainant's contention is well made.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <realmadrid.org>, be transferred to the Complainant.
Tony Willoughby Sole Panelist
Dated: March 28, 2009
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